WIPO Domain Name Decision: D2005-0729

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lilly ICOS LLC v. Brian Focker

Case No. D2005-0729

1. The Parties

The Complainant is Lilly ICOS LLC of Indianapolis, Indiana, United States of America, represented by Baker & Daniels of Indianapolis, Indiana, United States of America.

The Respondent is Brian Focker of Sydney, New South Wales, Australia.

2. The Domain Name and Registrar

The disputed domain name <cialismagic.com> (the “Domain Name”) is registered with Go Daddy Software (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on July 11, 2005, and in hard copy on July 14, 2005. A “Supplemental Complaint” containing additional substantive contentions was filed with the Center by email on July 12, 2005, and in hard copy on July 15, 2005.

The Rules for the Uniform Domain Name Dispute Resolution Policy (the “Rules”) do not contain any express provision for substantive amendments to complaints on the initiative of the complainant at this or any other stage. However, paragraph 4(b) of the Rules contemplates that a complaint may be amended prior to formal notification to a respondent in order to cure administrative deficiencies identified by the dispute resolution service provider. Furthermore, amendments to complaints prior to the formal notification do not normally give rise to the procedural difficulties which are liable to result from supplemental filings following the formal notification, and particularly following the respondent’s response. Accordingly, amendments to complaints filed prior to notification can be accepted even if they cover matters which could have been included in the original complaint. In the circumstances, the Panel will treat the Supplemental Complaint as part of the Complaint in exercise of its general powers under paragraph 10 of the Rules, and the documents will be referred to together as the “Complaint”.

The Center transmitted its standard request for registrar verification to the Registrar by email on July 11, 2005. The Registrar responded on July 12, 2005, confirming that it was the Registrar and the Respondent was the registrant of the Domain Name, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the registration, that the Domain Name would remain locked during this proceeding, and that the registration agreement was in English and included a submission to the jurisdiction of the courts at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the Domain Name; and providing the contact details recorded on its Whois database in respect of the registration.

The Registrar’s response was ambiguous as to whether the Registrar had received a copy of the Complaint. The Complaint itself stated that it was sent to the Registrar by express post and email, but there was no equivalent statement in the Supplemental Complaint. Since the Center sent copies of the Complaint and the Supplemental Complaint to the Registrar when it formally notified the Complaint, any failure on the part of the Complainant to comply with paragraph 4(b) of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”) was immaterial and is hereby waived by the Panel.

The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules. In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint and the proceedings commenced on July 18, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2005. Separate Responses to the Complaint and the Supplemental Complaint were filed by the Respondent with the Center in electronic form on August 4, 2005. Although the covering email and a subsequent email from the Respondent asserted that hard copies were sent by regular post to the Center, they were not received prior to transmission of the case file to the Panel. In addition, the content of the Responses did not comply with various requirements in paragraph 5(b) of the Rules. The Panel exercises its discretion to waive such non-compliance under paragraph 12 of the Rules. The Responses will also be treated as a single document and referred to together as the “Response”.

The Center appointed Jonathan Turner as the sole Panelist in this matter on August 17, 2005. The Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. Having reviewed the file, the Panel is satisfied that, apart from the deficiencies noted and waived above, the Complaint and the Response complied with applicable formal requirements, were duly filed and notified, and have been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.

By email of August 16, 2005, the Complainant submitted a “Reply to Respondent’s Response” together with an attachment. Under the Policy and the Rules, complainants have no right to make additional submissions in reply. The Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 12 of the Rules; and a party’s request may be regarded as an invitation to the Panel to exercise this discretion.

The principles which should be applied in exercising this discretion have been considered in numerous cases decided under the Policy and Rules, and were summarized in The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447, in the following terms: “that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself”.

As was pointed out in that and other cases, if an additional submission by the Complainant is admitted, fairness may demand that the Respondent be given an opportunity to reply, and so on, thereby compromising the procedural simplicity and efficiency of dispute resolution under the Policy which the Rules seek to achieve.

Applying these principles to this case, the Panel declines to admit the Complainant’s Reply to Respondent’s Response. The Complainant did not set out separate reasons for considering the further submission, but the Panel has reviewed the submission de bene esse. It essentially comprises observations regarding the Respondent’s Response (of a nature which the Center’s specialist Panelists should be capable of discerning without assistance); comments on the Respondent’s website (which the Complainant could have made in the Complaint); and the results of an investigation of the residents of the address given for the Respondent in the Registrar’s Whois database (which could have been carried out earlier and covered in the Complaint).

4. Factual Background

The Complainant is a joint venture of ICOS Corporation and Eli Lilly and Company (“Eli Lilly”). It supplies a pharmaceutical product for the treatment of erectile dysfunction under the name “CIALIS”. The product has been extensively publicized, promoted and sold under this name. In 2004, the Complainant’s sales under this mark exceeded US $550 million and its expenditure on marketing and sales amounted to about US $39 million.

The Complainant has registered “CIALIS” as a trademark in more than 117 countries. Its applications to register the mark were filed in the US trade mark office on June 17, 1999, and in the EU office on June 24, 1999. The Complainant announced its intention to sell the product under the mark “CIALIS” in July 2001, and its first sales were made under the mark in the European Union on January 22, 2003. Eli Lilly registered the domain name <cialis.com> on August 10, 1999, and it is now used for a website promoting the Complainant’s “CIALIS” product.

The Domain Name in dispute was registered on March 29, 2004. A Roger Dale in California, USA was originally identified both as the registrant and as the administrative and technical contacts. The registration was changed at some point after December 1, 2004, to identify the Respondent as the registrant, but no change was made to the administrative and technical contacts.

The Domain Name has been directed to a website apparently providing information relating to the “CIALIS” product and the subject of erectile dysfunction, and containing links to the websites of online pharmacies from which “CIALIS” and other products can be obtained. The Respondent also participated in Google’s “Adsense” program under which the website displayed advertisements of other parties and received click-through commissions when internet users clicked on the links in these advertisements.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its “CIALIS” trademark, which predates the registration of the Domain Name and is distinctive both inherently and through its extensive use. The Complainant submits that the addition of the word “magic” and the generic .com suffix are insufficient to distinguish, particularly as English is not the first language of many internet users.

The Complainant further contends that the Respondent does not have any rights or legitimate interests in respect of the Domain Name. The Complainant points out that the Respondent has not used the Domain Name in connection with any bona fide offering of goods or services, since his use of the Domain Name has been misleading; that he was not commonly known by the Domain Name or any similar name; and that he has not made non-commercial use of the Domain Name, but on the contrary has used it commercially to obtain click-through commissions and other fees for displaying advertisements on his website.

Finally, the Complainant alleges that the Domain Name was registered and is being used in bad faith to attract internet users to the Respondent’s website for commercial gain, in the form of click-through commissions and other fees for advertisements, by creating a likelihood of confusion with the Complainant’s mark. The Complainant adds that the provision of false contact details for Roger Dale (the original registrant and the administrative and technical contacts) is further evidence of bad faith.

The Complainant requests a decision that the Domain Name be transferred to it.

B. Respondent

The Respondent does not dispute that the Complainant has rights in the trademark “CIALIS”. On the contrary, he contends that he respects and values it, including by a statement in the footer of his website that “CIALIS is a registered trademark of Lilly ICOS LLC”.

However, the Respondent maintains that the Domain Name is not confusingly similar to the mark “CIALIS”. He alleges that there are thousands of websites using domain names which start with “CIALIS” and submits that it would be preposterous if there could only be one website with “CIALIS” in its domain name. He states that he devised the name “Cialismagic” after “days of brainstorming”, that it was an apt compound word depicting the “potent nature” of the Complainant’s product, and that he established the website “with single and selfless objective to help the people suffering from Erectile Dysfunction problem and to inform and educate them about the best solutions available online”. In view of the Complainant’s concern that non-English speaking internet users might be confused, he has inserted a link to Alta Vista’s “Babel Fish” automatic translator. He has also made other changes to his website to make it clearer that its purpose is to provide information about erectile dysfunction.

The Respondent further asserts that he has a legitimate interest in respect of the Domain Name since he has made legitimate non-commercial use of it for a website to create “awareness in the common masses on erectile dysfunction, a topic that was taboo subject not long time back”. According to the Respondent, he only participated in Google’s “Adsense” program to meet research, hosting and other associated costs required to keep the website alive and functional.

With regard to the allegation of registration and use in bad faith, the Respondent repeats that he registered and has used the Domain Name legitimately to promote awareness of the Complainant’s “CIALIS” product and impotence treatment. As regards the contact details, the Respondent states that the Domain Name was originally reserved for him by Roger Dale’s company, Bonanza Tech; that the original registration was correctly updated to record the Respondent as the registrant; and that the administrative and technical contact details were previously correct but are now out of date because Bonanza Tech has relocated.

6. Discussion and Findings

In accordance with paragraph 4 of the Policy, the Complainant must prove that the Domain Name is identical or confusingly similar to a trademark or service mark in which it has rights; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith. Each of these requirements will be considered in turn:

A. Identical or Confusingly Similar to Complainant’s Mark

It is not disputed that the Complainant has rights in the mark “CIALIS”.

The Panel considers that the Domain Name is confusingly similar to this mark. It consists of the mark followed by the word “magic” and the generic .com suffix. As the Respondent recognizes, internet users are likely to regard the word “magic” as referring to the physiological effect of the Complainant’s product. A laudatory epithet such as this is not apt to avoid confusion, since it may be taken by consumers to have been added by the owner of the mark to extol its product. In the Panel’s view, many internet users would assume that a website at “www.cialismagic.com” would be provided by or with the consent of the Complainant.

The alleged existence of many other domain names incorporating the mark “CIALIS” does not alter this conclusion. It is common for well-known marks to be abused by numerous parties seeking to profit from the resulting confusion, in particular through the registration and use of domain names incorporating such marks. There is no evidence that “CIALIS” has ceased to be distinctive of the Complainant’s product as a result of its widespread use; on the contrary, both the Respondent’s website and his submission in this proceeding recognize that “CIALIS” identifies the Complainant’s product.

In accordance with the terms of the Policy and many cases decided under it, the comparison to be made under this first requirement is between the Domain Name and the Complainant’s mark. The assessment of this issue is not affected by the content of a respondent’s website; indeed, the Policy contemplates that domain names may be registered and used in bad faith, even where internet users visiting a respondent’s website rapidly appreciate that it is not operated by or with the consent of the Complainant: see e.g. ACCOR v. Mr. Young Gyoon Nah, WIPO Case No. D2004-0681 and Bass Hotels & Resorts, Inc. v. Mike Rodgerall, WIPO Case No. D2000-0568, and other cases cited there.

It is therefore irrelevant for the purpose of this requirement whether the likelihood of confusion was increased (as contended by the Complainant) by the prominent use on the Respondent’s website of the Complainant’s “CIALIS” mark and photographs of its products; or diminished (as submitted by the Respondent) by the removal of these elements and the provision of a link to the “Babel Fish” automatic translator following the Complaint, and by the reference in the footer to “CIALIS” being a registered trademark of the Complainant.

However, the Panel has the following observations on the points made here by the Respondent. Firstly, a complaint cannot be defeated by subsequent changes to a respondent’s website; if this were the case, the Policy could be deprived of any effect. This point is addressed further below in relation to the third requirement of the Policy. Secondly, the footer of the Respondent’s website is not sufficiently prominent to avoid confusion, but to the extent that it has any effect, it increases the likelihood of the website being assumed to be operated by the Complainant, since it is likely to be taken as a conventional warning notice by the proprietor of the mark.

The Panel concludes that the first requirement of the Policy is satisfied.

B. No Rights or Legitimate Interests

In the Panel’s view, the Respondent has used the Domain Name commercially to promote pharmacies selling “CIALIS” and other products, as well as other businesses, in return for click-through commissions and other fees. This finding is corroborated by the Respondent’s own “press release”, which describes his website as “informative as well as commercial site”.

However, irrespective of whether the Respondent’s use has been commercial or non-commercial, the Panel is satisfied that it has not been fair or legitimate so as to confer rights or legitimate interests on the Respondent. On the contrary, the Respondent’s use has been such as to divert internet users to the websites advertised through the Respondent’s website by means of confusion with the Complainant’s well-known mark.

The Respondent’s use of the Complainant’s mark is not justified by the principle that a mark may be used legitimately without its owner’s consent to promote a bona fide offering of goods or services placed on the market by its owner (as to which, see Koninklijke Philips Electronics N.V. v. Cun Siang Wang, WIPO Case No. D2000-1778). In accordance with the propositions laid down in Oki Data Americas, Inc v. ASD, Inc, WIPO Case No. D2001-0903, and followed in many subsequent cases (see particularly Deutsche Telekom AG v. Mighty LLC/Domain Admin, WIPO Case No. D2005-0027), this principle can only be invoked under the Policy if (i) the Respondent is actually offering the goods or services at issue; (ii) the Respondent uses the website to sell only the trademarked goods or services; and (iii) the website accurately discloses the registrant’s relationship (or otherwise) with the trademark owner.

In this case, (i) the Respondent is not itself a supplier of the Complainant’s product; (ii) the advertisements on the Respondent’s website promote companies which supply products of the Complainant’s competitors as well as those of the Complainant; and (iii) the Respondent’s website does not make it clear that it is not a website of the Complainant. With regard to the last point, the Respondent’s website contains no clear statement that it is not authorized by the Complainant; prior to the Complaint, the header gave prominence to the mark “CIALIS” and pictures of the Complainant’s product; and in the Panel’s view the trademark and copyright notices in the footer are more likely to reinforce the impression that it is a website of the Complainant than to dispel such confusion.

The Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

It is clear from the evidence that the Respondent was aware of the Complainant’s mark when he registered the Domain Name and that he chose the Domain Name on account of its combination of the Complainant’s mark with a term which would be understood to describe the Complainant’s product. It is also clear from the evidence that the Respondent’s website has displayed advertisements for and links to websites of suppliers of “CIALIS” and other products, including products competing with “CIALIS”. The Respondent further admits that he has permitted his website to be used to advertise suppliers of other products in return for click-through commissions under Google’s “Adsense” program.

The Panel does not accept the Respondent’s allegation that he participated in the “Adsense” program only “to support research, hosting and other associated costs to keep the domain name <cialismagic.com> alive and functional”, in the absence of any evidence of the alleged expenditure and of the commissions received. The Panel further notes that the Respondent has not specifically controverted the Complainant’s evidence that he also received fees and commissions in respect of the direct links to online pharmacies provided on his website. On the contrary, as mentioned above, the Respondent has himself described his site as “informative as well as commercial”.

However, even if the only fees and commissions received by the Respondent were those obtained through the “Adsense” program, and even if they were used solely to defray the costs of his website, the use of the Domain Name for a website which promoted suppliers of other products was in itself an objectionable exploitation of the Complainant’s reputation under its mark. This use of the Domain Name attracted internet users to a website which promoted commercial suppliers of other products by misleading them into believing that it was a website operated by or with the consent of the Complainant. Such use is closely analogous to one of the specific examples of evidence of bad faith identified in paragraph 4(c) of the Policy and the Panel regards it as being in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

The Respondent cannot avoid a finding of that he is using a domain name in bad faith by relying on alterations to his website following the Complaint. The present tense in paragraph 4(a)(iii) of the Policy must be intended to refer to the position prior to notice of the dispute, in line with paragraph 4(c)(i) of the Policy, since otherwise the Policy could readily be frustrated.

The Panel is also satisfied that the Domain Name was registered in bad faith for the purposes of being used as discussed above.

The Respondent’s explanation for the incorrect contact details in the Whois database is somewhat implausible, but the Panel finds it unnecessary to rely on this.

The Panel concludes that the Domain Name was registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <cialismagic.com>, be transferred to the Complainant.

Jonathan Turner
Sole Panelist

Dated: August 30, 2005